China: Re: Protective Actions Against Trademark Infringement And Passing Off In PRC

Last Updated: 8 May 2007

Major Legal Provisions

1. The PRC General Principles of Civil Code

The PRC General Principles of Civil Code (effective on 1 January 1987) provides a general provision on trademark infringement. According to Article 118 of the General Principles, trademark owners whose rights have been infringed by plagiarism, alteration or imitation, may demand that the infringement be stopped, its ill effects be eliminated and damages be paid.

2. The PRC Trademark Law and its Implementing Regulations

The PRC Trademark Law (Revised) (effective on 1 December 2001) explains the elements of trademark infringement. Article 52 of the Law states the following acts constitute an infringement of a registered trademark :-

  1. to use a trademark that is identical with or similar to a registered trademark in respect of identical or similar goods without the authorization from the trademark registrant;
  2. to sell goods that are in infringement of the exclusive right to use a registered trademark;
  3. to counterfeit, or to make, without authorization, representations of a registered trademark of another person, or to sell such representations of a registered trademark that were counterfeited, or made without authorization;
  4. to change, without the consent of the trademark registrant, a registered trademark and market the goods bearing the changed trademark; or
  5. to cause, in other respects, prejudice to the exclusive right of another person to use a registered trademark.

Articles 50 of the Implementing Regulations of the PRC Trademark Law (Revised) (effective on 15 September 2002) further explains that the term "other harm" in Article 52(2) of the Trademark Law includes :-

  1. use as the name or trade dress of goods, of a sign which is the same as or similar to a third party's registered trademark for the same or similar goods, thereby misleading the public; or
  2. intentionally providing conditions that facilitate the infringement of a third person's exclusive right to use a trademark such as by storing, transporting mailing or concealing infringing goods.

3. The PRC Anti-unfair Competition Law

The PRC Anti-unfair Competition Law (effective on 1 December 1993) provides protection against acts of counterfeiting of registered trademarks and unregistered trademarks. Article 5 of the Law stipulates that managers should not use the following unfair methods in their business transactions which can damage other competitors :-

  1. to feign the others' registered trade mark;
  2. to use the specific name, package, decoration of famous or noted commodities, or use a similar name, package, decoration of the famous or noted commodities, and confusing consumers regarding the commodities and that of the famous or noted commodities;
  3. to use the name of another enterprise or personal name and confuse its commodity to with that of the other's commodity;
  4. to feign or pretend to be the certificate of attestation, mark of fame or high qualification, to feign the certificate of originally produced place of the commodities, and make others misunderstand the qualification of the commodities because of the false certificates.

The pre-requisite for an unregistered trademark to seek protection under the PRC Anti-unfair Competition Laws is that the trademark shall be recognized as a "well known" trademark in PRC. The People's court can make its own ruling to recognize a mark as a well-known trademark if there is sufficient evidence supporting that finding. Therefore, pre-registration for well-known trademarks is not compulsory. Whether a trademark is "well-known" depends on a number of factors in relation to the use and promotion of the mark in PRC, such as sales volume, promotion expenditures, extent of promotion, extent of public recognition in PRC etc.

4. The Product Quality Law

The Product Quality Law (Revised) (effective on 1 September 2000) also provides provisions regarding trademark infringement. Article 5 of the Law prohibits forgery or false use of authentication marks, famous-and-excellent-product marks or other product quality marks; prohibits forgery of the origin of a product, forgery or false use of the name and address of a factory of another producers; and prohibits mixing impurities or imitations into products that are produced or sold, or passing off a fake product as a genuine one, or passing off a defective product as a high-quality one.

5. The PRC Criminal Code

In PRC, counterfeiting of registered trademarks may constitute a crime. Articles 213 to 215 of the PRC Criminal Code (Revised) (effective on 1 October 1997) provide that the following acts may be prosecuted : -

  1. the unauthorized use of a mark identical to a registered trademark on the same type of goods;
  2. the sale of goods with the knowledge that they bear a counterfeit registered trademark; and
  3. the unauthorized forgery or manufacture of representation of a registered trademark of a third person, or the sale of representation of a registered trademark that has been forged or manufactured without authorization.

Possible punishments are imprisonment and monetary penalty.

Possible Actions

The following actions are available to trademark owners in case of trademark infringement or passing off : -

1. Court Action

A lawsuit for infringement or passing off of a trademark may be filed with the PRC court. The court has a right to make an order to award damages to the injured parties. Besides, in a trademark infringement case, the court can make an order to stop the infringing acts and to preserve property prior to proceedings if the registered trademark owner can satisfy the court that unless the infringing acts are stopped immediately, he would suffer irreparable damage.  

2. Administrative Action

(a) Administrations For Industry and Commerce ("AIC")

A registered trademark owner can file an application with the AIC at county level or higher to enforce his trademark rights by administrative action. If the application is deemed tenable, the AIC will conduct a raid as soon as possible. The AIC may impose the following remedies if it determines that an infringement has taken place after investigation :-

  1. order the infringer to immediately cease the infringing acts;
  2. confiscate and destroy the tools of infringement and the tools used to manufacture the infringer's goods or forge the representations of the trademark in question;
  3. a fine on the infringer.

AICs at a higher than county level may take actions against passing off of trade marks of another person.

(b) Technical Supervision Bureau ("TSB")

A registered trademark owner may choose to take action to enforce his trademark right through the TSB which is concerned with quality issues and which can be extended to correct packaging and labeling, including required details of name and address of manufacturer on products produced in PRC under the PRC Product Quality Law. TSB has many of the inspection and seizure power of the AIC including seizure of illegal products and punishing the infringers with a fine.

TSBs at a higher than county level may take actions against passing off of trade marks of another person.

(c) Custom Authorities

Registered trademark owners may request customs to seize suspected infringing goods at the point of import or export from PRC.

Generally, administrative actions are less expensive and time consuming, but there will be no compensation for damages through administrative actions. Therefore, the administrative actions may be a good choice only for minor trademark infringements, or the goal of the action is to stop the infringement only.

Conclusion

An unregistered trademark owners can only take action against the passing off of their trademarks in PRC if they can establish that their trademarks are "well-known". Registered trademark owners can however base their action on the relevant trademark registrations without the burden of proving the reputation of their trademarks in PRC. It is therefore advisable in order to ensure better protection and enable actions be taken against infringers effectively and speedily that all trademark owners register their marks in PRC.

Our Services

Experienced lawyers in our Intellectual Property regularly advise clients on intellectual property enforcement or registration in PRC, Hong Kong and elsewhere. If you have any question on the above article, please do not hesitate to contact us.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions